Patent It Yourself - PDF Archive

ChaPter 9 | Now for the LEGALESE—The CLAIMS | 243
dimension specified. The renowned judge, Learned
Hand, who wrote many famous patent decisions, once
opined that judges should read the modifier “substantially”
into every claim, even if it’s not already cited.
However, I strongly recommend that you don’t rely on
a judge to broaden your claim for you, but rather do it
yourself when you first write the claim.
• Antecedents. Provide a proper antecedent in the
beginning of your claim for every term you use in
the latter part of the claim. For example, in Claim
11 in the preceding part, the clause “the underside
of said sheet” near the end of the claim has no clear
antecedent in the beginning of the claim and thus might
be objected to by some examiners. The claim would
be better if clause a were amended by adding, “said
sheet having an under side” to provide unequivocal
support for the underside phase later. Conversely, if
you recite an element and recite the same element
again, you must use the article “said” (some attorneys
now use “the”) before the second occurrence. If you
want to recite two similar elements in different parts
of the claim, you should use the article “a” or “an” to
introduce both elements, but you must use different
adjectives to clearly differentiate the levers—for
example, “a prying lever connected to …; and a forcetransmitting
lever positioned on ….”
• “Whereby” Clause. At the end of your claim, I
recommend adding a “whereby” clause to specify the
advantage or use of the invention to hammer home to
the examiner, or anyone else who reads your claim,
the value of your invention. Thus in Claim 11, above,
you should add at the end of this claim, “whereby a
human can work, eat, and write in a convenient seated
position.” “Whereby” clauses don’t help to define
over the prior art, but they do force the examiner to
consider the advantages (Section 103 features) of your
invention and thus help to get the claims allowed.
However, don’t make the whereby clause too narrow or
a court may construe it against you.
• Reference Numbers. You may put the drawing’s
reference numerals in your claims after the appropriate
elements. Although this is required in some foreign
jurisdictions, practitioners in the U.S. seldom do it
unless the elements of the claim aren’t clear.
• Recesses. If your invention has an opening, hole, or
recess in its structure, you may, as stated, recite the
hole directly as such, even though it isn’t tangible. For
example, the recitation “said member having a hole
near its upper end” is permissible. See Appendix 3
(Glossary of Useful Technical Terms) for a list of
recesses.
• Jepson Claims. With regard to the rarely enforced Rule
75(e) (quoted in Section B2, above) requiring the use
of the Jepson style (a preamble containing old elements
and body of claims containing improvements of your
invention), most patent attorneys recommend that
claims not be cast in this style unless the examiner
requests it or unless the examiner is having trouble
understanding exactly what your inventive contribution
is. The reason for this is that a Jepson claim isolates
and hence minimizes your improvement, making
it easier to invalidate. If you do claim in the Jepson
format, draft your preamble so that it includes all the
elements or steps and their interconnections that are
already known from the prior art; then add a “cleavage”
clause such as “the improvement comprising” or
“characterized in that”; and then recite the elements of
your invention and their interconnections.
• Predetermined. Examiners prefer the word “predetermined.”
I recommend you use it whenever possible to
indicate that something has a size, thickness, length,
quality, etc., without limiting the claim to any specific
dimension or quality. For example, “said member
having a predetermined cross-sectional shape” and
“said valve arranged to open when a predetermined
gas pressure is developed.”
• Consisting versus Comprising. A claim that recites a
group of elements can be made “open” or “closed.” An
open claim (the normal case) will cover more elements
than it recites, whereas a closed claim is limited to and
will cover only the elements it specifically recites. To
make a claim open, use “includes” or “comprising”—
for example, “said machine comprising A, B, and C.” In
this case, a machine with four elements A, B, C, and D
will infringe. To make a claim closed (rarely done), use
“consist” or “having only”—for example, “Said machine
consisting of A, B, and C.” In this case, a machine with
elements A, B, C, and D will not infringe, since, in
patent law, the word “consist” is interpreted to mean
“having only the following elements.”
• A Plurality Of. Also, whenever you recite several units
of anything, preface your recitation with “a plurality
of”—such as, “a plurality of holes in said hose.”
• Less Is More. Remember that, because of the Boolean
“less is more” rule in interpreting claims, it’s not
necessary to recite a specific feature in your main
claim in order to cover that feature in combination
with the other elements of your invention. For
example, once I drafted a claim for a client where one
embodiment of her invention had a fingerlike support.
Not seeing the finger in the main claim, she asked me,
“Did you claim the finger?” I then explained to her